IP: How the AIA has affected patent prosecution

Part three of a guide to approaching the new patent system

The changes implemented by the America Invents Act (AIA) have made it so that the patent system needs to be approached in an entirely new way. Patent practitioners need to have a detailed understanding of how the AIA affects litigation, prosecution and post-grant proceedings. This article is the third of a three-part series. Read parts one and two of this series.

The America Invents Act (AIA) has significantly altered patent prosecution. One of the most widely discussed prosecution aspects of the AIA is the first-inventor-to-file system, which replaced the existing first-to-invent system on March 16. On paper, this is a dramatic shift in how patent rights are determined. From a practical perspective, though, one would hope that this would have little effect on patent prosecution, as filing an application early is generally advisable. While there are certainly exceptions and roadblocks to the preferred process of filing early and often, the new first-inventor-to-file system should, at a minimum, be a disincentive to those who procrastinate.

In addition to the first-inventor-to-file provisions, on March 16, 2013, practitioners will also be operating under multiple versions of 35 U.S.C. § 102: the “old” 102 (a) through (g); and the “new” 102(a)(1) and (2) (describing novelty/prior art) and section 102(b)(1) and (2) (describing exceptions). The “old” 102 still applies to patent applications in which all claims have an effective filing date before March 16, 2013. A thorough understanding of the differences between the “old” and the “new”, and when they apply, is critical to effectively managing the application of prior art. Litigators and post-grant review practitioners must become intimately familiar with all of the differences between the “old” 102 and the “new” 102 so that they can evaluate whether items are prior art or not.

Another important aspect of the AIA is the ability of third parties to submit prior art for any pending patent application prior to the granting of the patent. The preissuance submission must be timely and provide a description of the asserted relevance of each suggested prior art reference.

Furthermore, the AIA has implemented a new expedited examination program entitled “Track One.” The old accelerated examination program pre-AIA is still retained, but now applicants can decide which program, accelerated or Track One, suits their particular needs. A major benefit of Track One is that, unlike accelerated examination, it does not require an expensive pre-examination search document to illustrate how the claims of an application are allowable over known related art. A Track One application, though, requires at least a $6,480 fee for a large entity, much larger than the fee for that of accelerated examination. Similar to accelerated examination, Track One also envisions completion of prosecution within 12 months.

As can be seen, Track One allows applicants the ability to quickly develop a patent family around their core technologies by expediting initial patents on those technologies and then filing continuing applications to expand the family. Furthermore, Track One applications can be used to prevent third-party submissions via the use of expedited prosecution.

The above describes briefly how the AIA has affected patent prosecution. I hope that this discussion, as well as the previous articles on the AIA’s effects on patent litigation and post-grant proceedings, has been beneficial in your understanding of the new patent system. 

Contributing Author

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Wes Klimczak

Wes Klimczak is a patent attorney in the Silicon Valley office of Novak Druce Connolly Bove + Quigg LLP. His practice focuses on trademark and...

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